Arcelormittal (SA) v Mary Aurelien

WIPO Case No. DCO2022-0076

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Arcelormittal (SA) v. Mary Aurelien

Case No. DCO2022-0076

1. The Parties

The Complainant is Arcelormittal (SA), Luxembourg, represented by Nameshield, France.

The Respondent is Mary Aurelien, Canada.

2. The Domain Name and Registrar

The disputed domain name <corporate-arcelormittal.co> is registered with NameCheap, Inc. (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2022. On September 13, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent (Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 23, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 26, 2022.

The Center verified that the Complaint together with the amended Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 26, 2022. In accordance with the Rules, paragraph 5, the due date for Response was October 16, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 21, 2022.

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The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on November 4, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

The Complainant is one of the largest steel producing companies in the world and is the market leader in
steel for use in automotive, construction, household appliances and packaging with 69.1 million tonnes crude
steel made in 2021. It holds sizeable captive supplies of raw materials

and operates extensive distribution networks.

The Complainant is the owner of the international trademark ARCELORMITTAL n° 947686 registered on

August 3, 2007.

The Complainant also owns an important domain names portfolio, incorporating the trademark

ARCELORMITTAL, such as the domain name <arcelormittal.com> registered since January 27, 2006.

The disputed domain name was registered on September 12, 2022, and resolves to an inactive website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that its trademark ARCELORMITTAL is highly distinctive and internationally well known. The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark ARCELORMITTAL. In fact, the disputed domain name only varies from the Complainant’s trademark by the addition of “corporate”. Furthermore, the Complainant contends that the addition of the country code Top-Level Domain (“ccTLD”) “.co” does not change the overall impression of the designation as being connected to the Complainant’s trademark. It does not prevent the likelihood of confusion between the disputed domain name and the Complainant, its trademark and its domain names associated.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent is not sponsored by or affiliated with the Complainant in any way. In addition, the Complainant has not given to the Respondent the permission to use its

trademarks in any manner, including in domain names. It has not licensed, authorized or permitted the by the disputed domain name.

Finally, the Complainant claims that the disputed domain name was registered and is being used in bad faith. According to the Complainant, the Respondent could not be unaware of the Complainant’s trademark and reputation when registering the disputed domain name.

The Complainant contends that the Respondent has not demonstrated any activity in respect of the disputed domain name, and it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate.

Finally, the Complainant states that, MX servers are configured which suggests that the disputed domain name may be actively used for fraudulent email purposes.

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B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules requires the Panel to decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Under paragraph 4(a) of the Policy, the Complainants bear the burden of showing:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which
the Complainants have rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant owns trademark rights for ARCELORMITTAL marks. The disputed domain name contains the Complainant’s highly distinctive trademark ARCELORMITTAL with the word “corporate”. The addition of this word does not avoid a finding of confusing similarity between the disputed domain name and the Complainant’s marks. The ccTLD “.co” may be disregarded when examining the identity or confusing similarity between the Complainant’s ARCELORMITTAL trademarks and the disputed domain name.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights, satisfying the condition of the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Respondent has not provided any evidence of the conditions specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to rights or legitimate interests in the disputed domain name.

It is clear that the Respondent has not demonstrated any bona fide offering of goods and services by its use of the disputed domain name. Nor has the Respondent shown that it has been commonly known by the disputed domain name.

The Panel finds that the disputed domain name carries a risk of implied affiliation with the Complainant (see
section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”)). The Panel finds no signs of a legitimate noncommercial or fair use of the disputed
domain name.

The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests or otherwise rebut the Complainant’s arguments.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

In the present case, the Panel finds that it is inconceivable that the Respondent was unaware of the Complainant and its trademark rights when it registered the disputed domain name. The disputed domain name incorporates the Complainant’s distinctive trademark in its entirety, the reputation of which has been acknowledged by numerous UDRP panels (see e.g., Arcelormittal (SA) v. Whois Privacy Protection

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Foundation / Lawrence Andrew, WIPO Case No. D2019-1538). In the Panel’s view, the Respondent’s
awareness of the Complainant’s trademark rights at the time of registration suggests bad faith (see Red Bull
GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; BellSouth Intellectual
Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007).

In the present case, the Panel finds that the Complainant has sufficiently proven the reputation of its ARCELORMITTAL trademark. In the Panel’s view, the use of the ARCELORMITTAL mark with the addition of the word “corporate” under the “.co” ccTLD makes it difficult to conceive any plausible legitimate use of the disputed domain name by the Respondent. The non-use of the disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding. See section 3.3 of the WIPO Overview 3.0.

By failing to respond to the Complaint, the Respondent did not take any initiative to contest the foregoing.
Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate.

Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the disputed domain name was registered and used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <corporate-arcelormittal.co>, be transferred to the Complainant.

/Dilek Ustun Ekdial/
Dilek Ustun Ekdial
Sole Panelist
Date: November 21, 2022